Welcome back to Legal Geek. This week, we take a look at a recent court decision which confirms how difficult it can be to patent some board and card game designs in the current patent climate in the U.S., and what the options are for creative game developers.
https://archive.org/details/LegalGeekEp75
Amanda and Ray Smith developed and tried to patent a new method of playing Blackjack, consisting of new rules mixed in with those well known for this gambling card game. The claims focused on implementing these game rules with physical playing cards were rejected by the U.S. Patent Office for not being eligible patentable subject matter according to rules clarified a couple years ago in the Supreme Court's Alice Corp. v. CLS Bank decision primarily focusing on software.
A few weeks ago, the Federal Circuit Court of Appeals upheld the decision of the Patent Office and its Appeal Board to reject these claims on playing a card game as patent-ineligible. What made this case interesting beyond the card game field was that this is the first time the appeals court confirmed that it will not pass judgment on the Patent Office's suggested subject matter eligibility guidelines published to help explain the standards to lawyers and to patent Examiners following the decision in Alice.
Although Examiners rely on this guidance heavily in applying a lot of rejections to patent claims in certain art units like the games art unit, this guidance is not actual rules promulgated by the Patent Office and thus the court does not consider them binding enough to provide any judgment thereof. For now, the Alice decision and the guidance on what is an unpatentable Abstract Idea will stand, leaving a lot of software patents and method patents in rough shape for gaining any traction towards allowance as an issued U.S. Patent.
Turning this back towards our favorite field of card and board games, does this signal the end of patents for game rules? Not necessarily.
The Federal Circuit explicitly acknowledged that some inventions in games could still meet the requirement of being something substantially more than just an Abstract Idea under the test set forth in the Alice decision. An example provided for card games would be those for conducting a game with a newly developed original deck of cards. That's not much comfort for those wanting to innovate with 52-card standard decks of cards, but it does offer some hope for a way out of patent eligibility rejections.
Another good sign is that the Smiths also had claims for performing the same game rules using a video game system, like a software app, and those were deemed allowable and patent eligible by the Patent Office. As many board and card games move to parallel release as apps and physical products, this means patent protection is still likely available for part of these ideas. Plus design patents can be used to cover very broad aspects of graphical user interfaces which may be used with video games, so there's a lot of protection still out there for game designers.
However, the Smith decision this year simply confirms that some tabletop game designs will simply fall victim to the rules becoming harsher across the board against method claims and software type claims in U.S. Patents.
The Bottom Line is, it's always been tough to patent game rules, and that is not changing anytime soon.
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Temporary Closer: Thanks for listening. If you enjoy this segment and will be coming to Origins Game Fair in Columbus Ohio in June, please message me on Twitter @BuckeyeFitzy and we can meet up. I'm also giving two seminars about game design and the law, feel free to check them out.
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Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
Friday, May 27, 2016
Friday, May 20, 2016
Legal Geek No. 74: Trade Secrets step up to the "Big Kids Table" of IP
Welcome back to Legal Geek. This week, we take a look at the newly-signed Defend Trade Secrets Act federal law and how this is a big step towards harmonizing intellectual property as much as possible.
https://archive.org/details/LegalGeekEp74
Although President Obama and Congress have not pushed through the legislative gridlock much during his final months in office, which is typical for a lame duck president, one area of notable exception was federal regulation of trade secrets. The Defend Trade Secrets Act won widespread bipartisan support in both the House and the Senate, and had no opposition from the President as well. So what does this change, and is it a good thing?
First, a little background. A trade secret is confidential proprietary information which a company chooses to hold in secret rather than publicly disclosing for coverage by patent protection or the like. It covers any valuable commercial information which allows a business to hold an advantage over other competitor businesses without the same information. The most notable example is probably the formula for Coca-Cola. By keeping such information confidential, competitors cannot make the exact same product except by reverse engineering, and protection of the business asset can continue indefinitely, instead of for the limited times provided by other IP protection like patents.
Long known as the "4th major area of intellectual property," trade secrets were historically something that were only protected on the state level based on state laws. Unlike patent and copyright, which are mandated by a clause in the Constitution, trademarks and trade secrets are not a required function of the federal government. Nevertheless, just like the Lanham Act has long made trademarks protected on the federal level, now trade secrets will be also.
Similarly, while the federal government's Constitutional mandate for patents and copyrights preempts the States from legislating those items, trademarks and trade secrets will both have protection at the state level thanks to state laws and at the federal level thanks to Congress passing laws under the Commerce Clause of the Constitution. Thankfully, in the case of trade secrets, the state laws and the federal law do not differ by much in most circumstances.
However, one of the key benefits of the DTSA is harmonizing the various state laws, which mostly implemented a blueprint treatise called the Uniform Trade Secrets Act, but sometimes in slightly different ways. Allowing trade secret lawsuits into federal court allows for more predictable, nationwide case law to be developed on this subject. In addition, federal courts tend to be more well-versed at handling cross-state and international disputes which often arise in IP contexts. It is typically a net positive to have multiple venues available to handle a dispute, and that will now be the case for trade secrets.
The Bottom Line is, regardless of whether you support the idea of trade secret protection or IP law in general, having more uniformity and clarity of laws is a step in the right direction. The hope is that the DTSA can offer a fairer balance of employee rights in mobility to other jobs and employer rights in protecting confidential information and advantages. Time will tell if it serves this purpose, or becomes a contorted mess like some other areas of law.
----------------------------------
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
https://archive.org/details/LegalGeekEp74
Although President Obama and Congress have not pushed through the legislative gridlock much during his final months in office, which is typical for a lame duck president, one area of notable exception was federal regulation of trade secrets. The Defend Trade Secrets Act won widespread bipartisan support in both the House and the Senate, and had no opposition from the President as well. So what does this change, and is it a good thing?
First, a little background. A trade secret is confidential proprietary information which a company chooses to hold in secret rather than publicly disclosing for coverage by patent protection or the like. It covers any valuable commercial information which allows a business to hold an advantage over other competitor businesses without the same information. The most notable example is probably the formula for Coca-Cola. By keeping such information confidential, competitors cannot make the exact same product except by reverse engineering, and protection of the business asset can continue indefinitely, instead of for the limited times provided by other IP protection like patents.
Long known as the "4th major area of intellectual property," trade secrets were historically something that were only protected on the state level based on state laws. Unlike patent and copyright, which are mandated by a clause in the Constitution, trademarks and trade secrets are not a required function of the federal government. Nevertheless, just like the Lanham Act has long made trademarks protected on the federal level, now trade secrets will be also.
Similarly, while the federal government's Constitutional mandate for patents and copyrights preempts the States from legislating those items, trademarks and trade secrets will both have protection at the state level thanks to state laws and at the federal level thanks to Congress passing laws under the Commerce Clause of the Constitution. Thankfully, in the case of trade secrets, the state laws and the federal law do not differ by much in most circumstances.
However, one of the key benefits of the DTSA is harmonizing the various state laws, which mostly implemented a blueprint treatise called the Uniform Trade Secrets Act, but sometimes in slightly different ways. Allowing trade secret lawsuits into federal court allows for more predictable, nationwide case law to be developed on this subject. In addition, federal courts tend to be more well-versed at handling cross-state and international disputes which often arise in IP contexts. It is typically a net positive to have multiple venues available to handle a dispute, and that will now be the case for trade secrets.
The Bottom Line is, regardless of whether you support the idea of trade secret protection or IP law in general, having more uniformity and clarity of laws is a step in the right direction. The hope is that the DTSA can offer a fairer balance of employee rights in mobility to other jobs and employer rights in protecting confidential information and advantages. Time will tell if it serves this purpose, or becomes a contorted mess like some other areas of law.
----------------------------------
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
Thursday, May 12, 2016
Legal Geek No. 73: Will the Ross AI Replace all Attorneys?
Welcome back to Legal Geek. This week, we take a look at the first artificial intelligence "attorney" to be hired by a major U.S. law firm and what it means for the future of AI and the legal industry.
https://archive.org/details/LegalGeekEp73
The IBM cognitive computer Watson first hit widespread public awareness a few years ago when the computer took on various challenges including the game show Jeopardy. This was notable because the clues in Jeopardy use a lot of grammar and word tricks to hint at the desired answers, which is a level of language context which was difficult for AI's to accurately understand before Watson.
Now this technology is beginning to be applied in some real-world contexts. One of these is a shopper assistance robot being tested certain retail stores like Lowes. But this week, the Watson computer upgraded to the next level of profession as an AI attorney called Ross based on IBM's Watson technology was officially hired to work in the bankruptcy department of Baker & Hosteler, a department with 50+ attorneys in a large national law firm.
Although reports have it that other law firms are also licensing to use Ross, Baker is the first to jump in the pool officially. But will this be the first step to removing all those human attorney-types like yours truly with soulless automations of the law?
Probably not, although cognitive computing like Ross could change the legal services industry just like robotics and machinery changed manufacturing years ago. What Ross claims to offer is a rapid jump in efficiency in legal research and case law updates.
For example, Ross is able to take questions in plain English, and then it reads through the entire body of relevant law and returns an answer with citations from legislation and case law to bring the questioner up to speed quickly. Unlike current legal research tools like Lexis and Westlaw, Ross narrows the results to a few highly relevant answers instead of thousands and provides answers in a casual, understandable language like a human colleague would. Plus, Ross monitors for law updates and informs the user when changes occur, while also learning from experience to gain speed and improve results over time.
This is the type of work that typically gets assigned to junior-level attorneys and legal assistants, which means that some of the overhead with law practice can be shifted to work on other types of projects. That should allow firms to more efficiently use time and money of clients to reach desired results, but there's still going to be a human hand involved thanks to the heavy regulation applied to the legal services industry, among other things.
But who knows, maybe Ross will pass the bar exam in a few states, and then the sky is the limit on how far this cognitive computer technology can go.
The Bottom Line is, even the Baker firm refers to technologies like Ross as an AI legal assistant instead of an attorney, and there's a long way to go before we can replace all those attorneys. Nevertheless, this is the type of AI we only dreamed of previously in shows like Star Trek, and the legal profession as well as others can only stand to benefit and get better as a result.
----------------------------------
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
https://archive.org/details/LegalGeekEp73
The IBM cognitive computer Watson first hit widespread public awareness a few years ago when the computer took on various challenges including the game show Jeopardy. This was notable because the clues in Jeopardy use a lot of grammar and word tricks to hint at the desired answers, which is a level of language context which was difficult for AI's to accurately understand before Watson.
Now this technology is beginning to be applied in some real-world contexts. One of these is a shopper assistance robot being tested certain retail stores like Lowes. But this week, the Watson computer upgraded to the next level of profession as an AI attorney called Ross based on IBM's Watson technology was officially hired to work in the bankruptcy department of Baker & Hosteler, a department with 50+ attorneys in a large national law firm.
Although reports have it that other law firms are also licensing to use Ross, Baker is the first to jump in the pool officially. But will this be the first step to removing all those human attorney-types like yours truly with soulless automations of the law?
Probably not, although cognitive computing like Ross could change the legal services industry just like robotics and machinery changed manufacturing years ago. What Ross claims to offer is a rapid jump in efficiency in legal research and case law updates.
For example, Ross is able to take questions in plain English, and then it reads through the entire body of relevant law and returns an answer with citations from legislation and case law to bring the questioner up to speed quickly. Unlike current legal research tools like Lexis and Westlaw, Ross narrows the results to a few highly relevant answers instead of thousands and provides answers in a casual, understandable language like a human colleague would. Plus, Ross monitors for law updates and informs the user when changes occur, while also learning from experience to gain speed and improve results over time.
This is the type of work that typically gets assigned to junior-level attorneys and legal assistants, which means that some of the overhead with law practice can be shifted to work on other types of projects. That should allow firms to more efficiently use time and money of clients to reach desired results, but there's still going to be a human hand involved thanks to the heavy regulation applied to the legal services industry, among other things.
But who knows, maybe Ross will pass the bar exam in a few states, and then the sky is the limit on how far this cognitive computer technology can go.
The Bottom Line is, even the Baker firm refers to technologies like Ross as an AI legal assistant instead of an attorney, and there's a long way to go before we can replace all those attorneys. Nevertheless, this is the type of AI we only dreamed of previously in shows like Star Trek, and the legal profession as well as others can only stand to benefit and get better as a result.
----------------------------------
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
Thursday, May 5, 2016
Legal Geek No. 72: Will YouTube Content ID Changes make Content Creators Happy?
Welcome back to Legal Geek. This week, we review some recent changes to YouTube's copyright protection system called Content ID and determine whether more changes will come to help content creators relying on Fair Use and their own licensed works.
https://archive.org/details/LegalGeekEp72
For copyright owners wanting to stop infringing uses on YouTube videos of third parties, there are multiple options for making claims to pull potential infringing videos down or mute them for further investigation under DMCA procedures. For example, copyright owners can make manual claims about specific videos they notice, or for some users with a lot of copyrights, an automated system called Content ID can also make such claims. Although the video poster can challenge such claims to try and get the video posted again, this process causes significant delays and frustration even if the copyright claim turns out to be not valid.
For online content creators like podcasters with video content and streamers, the use of YouTube and viewer access to videos is vital for staying in business, but these copyright claims can pull those videos down at critical junctures. Especially for those who make money monetizing with ads on YouTube, this could be the difference between making rent or not in a given month.
So particularly with the automated Content ID system, any over inclusive identification of potential infringing content stifles the very content creators which draw so many viewers to the platform. Thus, YouTube is always striving to make this system more accurate at properly identifying copyright infringement while leaving fair use and licensed uses alone.
The most recent of those changes were announced on YouTube's creator blog last week. Essentially, a video subject to an automated copyright claim under Content ID will still be able to generate advertising revenue while the claim is resolved, and once the claim is resolved, the winning party will be paid accordingly. Thus, videos from popular content creators will not always just disappear or get muted, and more importantly, the ad revenue that would normally come in will still be possible if the copyright claim is challenged as invalid.
These changes will help balance the leverage between the parties in a YouTube copyright dispute. Content creators will not just be at the total whims of the automated Content ID system. And YouTube indicated in the blog post that further improvements to make the system even more accurate are likely on the way. It's certainly a positive step for content creators, and more may be on the way.
The Bottom Line is, the concept of Fair Use is a gray area in copyright law that is ever shifting thanks to many court challenges and decisions. That makes tailoring an automated copyright infringement detection system even more difficult, and we should give YouTube credit for making efforts to have the system be fair and balanced for both copyright owners and content creators, both of which deserve to be fairly compensated for their creative works.
----------------------------------
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
https://archive.org/details/LegalGeekEp72
For copyright owners wanting to stop infringing uses on YouTube videos of third parties, there are multiple options for making claims to pull potential infringing videos down or mute them for further investigation under DMCA procedures. For example, copyright owners can make manual claims about specific videos they notice, or for some users with a lot of copyrights, an automated system called Content ID can also make such claims. Although the video poster can challenge such claims to try and get the video posted again, this process causes significant delays and frustration even if the copyright claim turns out to be not valid.
For online content creators like podcasters with video content and streamers, the use of YouTube and viewer access to videos is vital for staying in business, but these copyright claims can pull those videos down at critical junctures. Especially for those who make money monetizing with ads on YouTube, this could be the difference between making rent or not in a given month.
So particularly with the automated Content ID system, any over inclusive identification of potential infringing content stifles the very content creators which draw so many viewers to the platform. Thus, YouTube is always striving to make this system more accurate at properly identifying copyright infringement while leaving fair use and licensed uses alone.
The most recent of those changes were announced on YouTube's creator blog last week. Essentially, a video subject to an automated copyright claim under Content ID will still be able to generate advertising revenue while the claim is resolved, and once the claim is resolved, the winning party will be paid accordingly. Thus, videos from popular content creators will not always just disappear or get muted, and more importantly, the ad revenue that would normally come in will still be possible if the copyright claim is challenged as invalid.
These changes will help balance the leverage between the parties in a YouTube copyright dispute. Content creators will not just be at the total whims of the automated Content ID system. And YouTube indicated in the blog post that further improvements to make the system even more accurate are likely on the way. It's certainly a positive step for content creators, and more may be on the way.
The Bottom Line is, the concept of Fair Use is a gray area in copyright law that is ever shifting thanks to many court challenges and decisions. That makes tailoring an automated copyright infringement detection system even more difficult, and we should give YouTube credit for making efforts to have the system be fair and balanced for both copyright owners and content creators, both of which deserve to be fairly compensated for their creative works.
----------------------------------
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
Friday, April 29, 2016
Legal Geek No. 71: Google's Battle Against Spoilers
Welcome back to Legal Geek. This week, we again tackle a topic relevant to Game of Thrones and other TV fans: spoilers, and what Google is doing in the patent world to help combat such spoilers from ruining the day of those trying to avoid them.
https://archive.org/details/LegalGeekEp71
Spoilers are a phenomenon which really did not exist before the sharing of information on the Internet. Going back all the way to shows like The X-Files and online message boards, fans of story-based television have often wanted to experience the surprise plot twists and highs and lows of narrative without having someone tell them beforehand what is going to happen. With DVR and streaming services now making time-shifting of television the standard for many viewers, plus the omnipresent existence of social media linking us all together more than ever, spoilers have hit an all-time high in relevance.
Mainstream media and the public understand this phenomenon more than ever, as proven by the mostly successful public drive to avoid spreading of spoilers for Star Wars: The Force Awakens when it came out last year. However, even well-meaning media outlets can make mistakes and accidental spoilers just by selecting the wrong photo to put in a twitter post about an episode review, as was the case with a photo of Melisandre which Slate.com initially put on Twitter this week.
Can this spoiler problem be solved? Google certainly thinks so, and it's patent department is riding in like a white knight with multiple patents to try and save the day from spoilers. Even this week, Google was granted another in a series of patents which are innovating in ways to help avoid spoilers.
Going back to 2011 and 2012, Google was first granted two U.S. Patents including 8,676,911 on timeshifting messages located in forums and message boards online based on content which has not yet been reached by a user watching a TV show or the like. In 2015, Google was granted U.S. Patent No. 8,943,529 which claims a system for evaluating when a user changes the channel whether what is on the channel contains spoilers for content yet to be viewed, such as by avoiding tuning to a channel in the middle of an episode being saved for later viewing on the DVR.
Later in 2015, additional patents like U.S. Patent No. 9,002,942 were granted to Google on more broad claims covering the processing and determination of content spoilers, so that a spoiler warning can be given to pertinent users of social media or other technology before a spoiling occurs. Even this past week, one of the image processing and sharing technologies Google is developing as the backbone for implementing this spoiler stopping technology received another granted U.S. Patent No. 9,325,783. Additional applications are published or in the works as well, which means Google is tackling this spoiler monster with a plethora of patents.
If Google can make these patented technologies the new standard for content processing online, the problem of spoilers may indeed be mostly solved, once and for all. Well, at least except for that jerk at the water cooler at work who speaks too loudly about what he watched live last night.
The Bottom Line is, despite software and business method patents being on shakier ground following some recent Supreme Court decisions, the efforts of Google prove that these types of patents are not dead, especially when addressing problems like spoilers that only became very prevalent thanks to current television and social media technologies and trends. In other words, spoilers are dead, long live spoilers.
----------------------------------
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
https://archive.org/details/LegalGeekEp71
Spoilers are a phenomenon which really did not exist before the sharing of information on the Internet. Going back all the way to shows like The X-Files and online message boards, fans of story-based television have often wanted to experience the surprise plot twists and highs and lows of narrative without having someone tell them beforehand what is going to happen. With DVR and streaming services now making time-shifting of television the standard for many viewers, plus the omnipresent existence of social media linking us all together more than ever, spoilers have hit an all-time high in relevance.
Mainstream media and the public understand this phenomenon more than ever, as proven by the mostly successful public drive to avoid spreading of spoilers for Star Wars: The Force Awakens when it came out last year. However, even well-meaning media outlets can make mistakes and accidental spoilers just by selecting the wrong photo to put in a twitter post about an episode review, as was the case with a photo of Melisandre which Slate.com initially put on Twitter this week.
Can this spoiler problem be solved? Google certainly thinks so, and it's patent department is riding in like a white knight with multiple patents to try and save the day from spoilers. Even this week, Google was granted another in a series of patents which are innovating in ways to help avoid spoilers.
Going back to 2011 and 2012, Google was first granted two U.S. Patents including 8,676,911 on timeshifting messages located in forums and message boards online based on content which has not yet been reached by a user watching a TV show or the like. In 2015, Google was granted U.S. Patent No. 8,943,529 which claims a system for evaluating when a user changes the channel whether what is on the channel contains spoilers for content yet to be viewed, such as by avoiding tuning to a channel in the middle of an episode being saved for later viewing on the DVR.
Later in 2015, additional patents like U.S. Patent No. 9,002,942 were granted to Google on more broad claims covering the processing and determination of content spoilers, so that a spoiler warning can be given to pertinent users of social media or other technology before a spoiling occurs. Even this past week, one of the image processing and sharing technologies Google is developing as the backbone for implementing this spoiler stopping technology received another granted U.S. Patent No. 9,325,783. Additional applications are published or in the works as well, which means Google is tackling this spoiler monster with a plethora of patents.
If Google can make these patented technologies the new standard for content processing online, the problem of spoilers may indeed be mostly solved, once and for all. Well, at least except for that jerk at the water cooler at work who speaks too loudly about what he watched live last night.
The Bottom Line is, despite software and business method patents being on shakier ground following some recent Supreme Court decisions, the efforts of Google prove that these types of patents are not dead, especially when addressing problems like spoilers that only became very prevalent thanks to current television and social media technologies and trends. In other words, spoilers are dead, long live spoilers.
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Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
Friday, April 22, 2016
Legal Geek No. 70: Game of Thrones TM Battles
Welcome back to Legal Geek. This week, we celebrate the return of Game of Thrones for its sixth season by taking a look at some of the recent legal battles HBO is involved with regarding trademarks related to the popular show, and how that part of the trademark process works.
https://archive.org/details/LegalGeekEp70
When a trademark application is filed at the U.S. Patent and Trademark Office, an Examining Attorney working for the Office reviews the application after a few weeks or months to determine whether the application complies with all of the rules for having a trademark. While a search is done by the Examining Attorney for competing similar marks which would create a likelihood of confusion conflict, this search is not always perfect.
Thus, the system also allows for third parties in the public to review all trademark applications that are allowed and file Oppositions to them, if necessary. This process is known as publication in the Official Gazette, and if no Opposition is filed within 30 days, the trademark then registers as finalized intellectual property. While the trademark can still be challenged later, this is the best opportunity to cut off registrations and potential trademark infringements before they occur, in my experience.
As a result, this is precisely the mechanism which HBO, the maker of our favorite series about dragons and kings, uses often and has used against them to try and box out what protection is possible for Game of Thrones and related story items. After all, while HBO's copyrights protect the show itself, it is the trademarks where all the potential merchandising revenue is protected.
Just this month, for example, HBO opposed an application for a video game called "Game of Trolls" from Jumpstart Games, Inc., which is intended to be a tie-in for the upcoming DreamWorks movie Trolls. Opposition tends to be a somewhat costly mini-litigation type process, which means small game companies may be inclined to back down rather than fight, even in a gray area like using the word "Game of" in a video game context. Of course, with DreamWorks possibly backing Jumpstart Games in this fight, that might not be what happens here. When two giants get involved, it can be as bloody as the red wedding.
HBO has aggressively defended and tried to expand its rights, with prior recent oppositions to other marks like "Gamethrone," "League of Thrones," and "Game of Drones." Of course, HBO files their own applications and is not immune from being opposed themselves, as was the case recently when the application for "Three-Eyed Raven" was opposed by Ravenswood Winery. With all the Opposition proceedings at the Trademark Office, HBO's legal team likely gears up like the Battle of Blackwater for all this work.
The Bottom Line: HBO will win some of these Opposition battles and lose others, but this is a great example for companies who want to learn how to aggressively pursue and defend what rights can be had on a popular pop culture item like Game of Thrones. Plus, small designers and developers would be wise to know what battles might await in trademark realm should they enter business, especially when trying to profit in some tangential manner off someone else's IP.
And while they do all these legal battles in the background, we can simply keep on enjoying the Khaleesi, the dragons, and all that death.
----------------------------------
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
https://archive.org/details/LegalGeekEp70
When a trademark application is filed at the U.S. Patent and Trademark Office, an Examining Attorney working for the Office reviews the application after a few weeks or months to determine whether the application complies with all of the rules for having a trademark. While a search is done by the Examining Attorney for competing similar marks which would create a likelihood of confusion conflict, this search is not always perfect.
Thus, the system also allows for third parties in the public to review all trademark applications that are allowed and file Oppositions to them, if necessary. This process is known as publication in the Official Gazette, and if no Opposition is filed within 30 days, the trademark then registers as finalized intellectual property. While the trademark can still be challenged later, this is the best opportunity to cut off registrations and potential trademark infringements before they occur, in my experience.
As a result, this is precisely the mechanism which HBO, the maker of our favorite series about dragons and kings, uses often and has used against them to try and box out what protection is possible for Game of Thrones and related story items. After all, while HBO's copyrights protect the show itself, it is the trademarks where all the potential merchandising revenue is protected.
Just this month, for example, HBO opposed an application for a video game called "Game of Trolls" from Jumpstart Games, Inc., which is intended to be a tie-in for the upcoming DreamWorks movie Trolls. Opposition tends to be a somewhat costly mini-litigation type process, which means small game companies may be inclined to back down rather than fight, even in a gray area like using the word "Game of" in a video game context. Of course, with DreamWorks possibly backing Jumpstart Games in this fight, that might not be what happens here. When two giants get involved, it can be as bloody as the red wedding.
HBO has aggressively defended and tried to expand its rights, with prior recent oppositions to other marks like "Gamethrone," "League of Thrones," and "Game of Drones." Of course, HBO files their own applications and is not immune from being opposed themselves, as was the case recently when the application for "Three-Eyed Raven" was opposed by Ravenswood Winery. With all the Opposition proceedings at the Trademark Office, HBO's legal team likely gears up like the Battle of Blackwater for all this work.
The Bottom Line: HBO will win some of these Opposition battles and lose others, but this is a great example for companies who want to learn how to aggressively pursue and defend what rights can be had on a popular pop culture item like Game of Thrones. Plus, small designers and developers would be wise to know what battles might await in trademark realm should they enter business, especially when trying to profit in some tangential manner off someone else's IP.
And while they do all these legal battles in the background, we can simply keep on enjoying the Khaleesi, the dragons, and all that death.
----------------------------------
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
Thursday, April 14, 2016
Legal Geek No. 69: Podcast "Patent Troll" Finding Mixed Results in Court/USPTO
Welcome back to Legal Geek. This week, we take a look at recent updates in the legal proceedings surrounding everyone's favorite alleged "patent troll" in the podcasting industry.
https://archive.org/details/LegalGeekEp69
A long-time hot topic of conversation in this podcasting world has been the attempted enforcement of a patent owned by Personal Audio LLC against various famous podcasters like Adam Carolla and news networks. This also coincides with one of the hottest topics in U.S. patent law, patent enforcement entities and whether overbroad patents in electronic fields can be cut back.
The specific claims in U.S. Patent 8,112,504 focus on the distribution of old and new episodes together in a compilation file, and while this certainly covers podcasting, it is also very broad. The question is whether it was too broad a patent grant compared to prior art compilations known in similar fields.
This week, Personal Audio and the Electronic Frontier Foundation began presenting arguments to the Federal Circuit Court of Appeals in this controversy, and the recent history has left this case in a cutting edge place. The EFF has raised money to challenge Personal Audio's patent in new post-grant review proceedings under the America Invents Act at the U.S. Patent Office's Appeal Board, and this process led to a decision by the Board last April that the patent was invalid over some prior art. This Federal Circuit case is the appeal of that decision to invalidate Personal Audio's patent.
However, in the interim few months, some of the first litigations filed by Personal Audio came to settlement or final decisions. Adam Corolla settled the claim with Personal Audio in August, and then in September, a jury in Texas federal court found the patent to be valid and infringed by CBS, imposing a $1.3 million verdict on the network.
So Personal Audio is winning big in litigations while losing the validity battle at the U.S. Patent Office. Normally there would be potential estoppel effects applied to the loser of one of these proceedings, or a stay in the litigation when a post-grant review is filed, but in this case the parties are different because the EFF is unrelated to defendants like Corolla and CBS and is fighting this fight for different reasons than the litigation defendants.
Those inconsistent results have caused Personal Audio to present some interesting arguments this week, such as arguments that the Texas jury's factual findings must be binding on the Federal Circuit because the Seventh Amendment prevents re-examination of the facts at the appeal level in such circumstances. Yet that case is not what is appealed here, but instead, the administrative Patent Office Appeal Board ruling of invalidity (which would be binding moving forward on Personal Audio, for what it's worth). That circumstance makes this an interesting hole in legal estoppel practice in this relatively new patent challenge context.
The Bottom Line is, beyond just the podcasting industry, Personal Audio may be the so-called patent troll that ends up deciding the important rules moving forward for how competing decisions work at the Patent Office Appeal Board as compared to federal courts. The Patent Office decision last year dealt the alleged troll a seemingly mortal blow, but Personal Audio is not going down without an important legal fight for the landscape of patent law in the future. It will be fascinating to see how these novel arguments play out at the Federal Circuit, if not also the Supreme Court.
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Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
https://archive.org/details/LegalGeekEp69
A long-time hot topic of conversation in this podcasting world has been the attempted enforcement of a patent owned by Personal Audio LLC against various famous podcasters like Adam Carolla and news networks. This also coincides with one of the hottest topics in U.S. patent law, patent enforcement entities and whether overbroad patents in electronic fields can be cut back.
The specific claims in U.S. Patent 8,112,504 focus on the distribution of old and new episodes together in a compilation file, and while this certainly covers podcasting, it is also very broad. The question is whether it was too broad a patent grant compared to prior art compilations known in similar fields.
This week, Personal Audio and the Electronic Frontier Foundation began presenting arguments to the Federal Circuit Court of Appeals in this controversy, and the recent history has left this case in a cutting edge place. The EFF has raised money to challenge Personal Audio's patent in new post-grant review proceedings under the America Invents Act at the U.S. Patent Office's Appeal Board, and this process led to a decision by the Board last April that the patent was invalid over some prior art. This Federal Circuit case is the appeal of that decision to invalidate Personal Audio's patent.
However, in the interim few months, some of the first litigations filed by Personal Audio came to settlement or final decisions. Adam Corolla settled the claim with Personal Audio in August, and then in September, a jury in Texas federal court found the patent to be valid and infringed by CBS, imposing a $1.3 million verdict on the network.
So Personal Audio is winning big in litigations while losing the validity battle at the U.S. Patent Office. Normally there would be potential estoppel effects applied to the loser of one of these proceedings, or a stay in the litigation when a post-grant review is filed, but in this case the parties are different because the EFF is unrelated to defendants like Corolla and CBS and is fighting this fight for different reasons than the litigation defendants.
Those inconsistent results have caused Personal Audio to present some interesting arguments this week, such as arguments that the Texas jury's factual findings must be binding on the Federal Circuit because the Seventh Amendment prevents re-examination of the facts at the appeal level in such circumstances. Yet that case is not what is appealed here, but instead, the administrative Patent Office Appeal Board ruling of invalidity (which would be binding moving forward on Personal Audio, for what it's worth). That circumstance makes this an interesting hole in legal estoppel practice in this relatively new patent challenge context.
The Bottom Line is, beyond just the podcasting industry, Personal Audio may be the so-called patent troll that ends up deciding the important rules moving forward for how competing decisions work at the Patent Office Appeal Board as compared to federal courts. The Patent Office decision last year dealt the alleged troll a seemingly mortal blow, but Personal Audio is not going down without an important legal fight for the landscape of patent law in the future. It will be fascinating to see how these novel arguments play out at the Federal Circuit, if not also the Supreme Court.
----------------------------------
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
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